If other professions were paid like artists — “Jeez, people with jobs, why you keep demanding money and stuff?!”

Hugh Hansen’s One Thing After Another Blog — Noted copyright scholar Hansen has recently begun a blog which promises plenty of great thoughts on legal issues, including IP and copyright.

MPAA Fires Back at Piracy Study — A recent study that purports to show that some films were harmed by the shutdown of Megaupload in 2012 is unclear and full of speculation, according to the MPAA.

LGBT Cinema, Diverse Voices Quieted by Piracy’s Punch? — Ellen Seidler looks at a recent study by GLAAD that shows representations of LGBT characters in film has declined. There’s a number of reasons for the decline, but one in particular that Seidler has first-hand experience with: online piracy. Seidler concludes with practical tips for filmmakers to help ensure the release of their film is successful.

Emphasis on “goo” – authors point out the many fallacies of Google’s book scanning defense — John Degen runs us through a memorandum filed by the Author’s Guild in opposition to Google’s fair use defense that it has raised in the ongoing Google Book Search lawsuit. “The Authors Guild (America’s version of The Writers’ Union of Canada), is proving itself, once again, to be the best friend of writers worldwide as it continues its David and Goliath legal fight with all-seeing search giant Google.”

Internet-Television Streaming Sites – Coming to a Circuit Court Near You — With lawsuits currently in four circuits, the dispute between television broadcasters and Aereo and its frienemy Aereokiller (now “FilmOn X”) over whether a commercial service can “design around” the public performance right can be difficult to keep track of. Alexandra Goldstein brings you up to speed on the latest developments in those cases.

Copyright Liability for Filelockers: Disney v Hotfile — Finally, I rarely link to my own posts here, but with news this week that film studios were successful in a copyright infringement suit against notorious cyberlocker Hotfile, and with the actual opinion under seal for the time being, I thought it would be helpful to point out a post I had previously written detailing some of the issues at stake and arguments made.

On Tuesday, a Ninth Circuit panel heard oral arguments in a case brought by television broadcasters against internet retransmission service FilmOn X (née Aereokiller). You can listen to audio of the hearing. The appeal arose over a preliminary injunction against FilmOn that was granted late last year by district court judge George Wu, who held that there was a likelihood that FilmOn X infringed the broadcasters’ public performance rights through its operation of a subscription based service that retransmits broadcast television over the internet.

On appeal, FilmOn X argues, essentially, that the Ninth Circuit should reverse the lower court’s decision and instead follow the lead of the Second Circuit, which, earlier this year, affirmed similar service Aereo as not infringing the public performance right. That decision followed the Circuit court’s Cablevision precedent, which adopted a non-statutory “unique copy” element to distinguish between non-infringing private performances and infringing public performances.

An interesting exchange occurred toward the end of the arguments (37:11), when Judge Brian Cogan asked FilmOn X attorney Ryan Baker the following:

What we’re really talking about is the definition of “to the public” in the Transmit Clause, and we know that “to the public” includes receipt of the performance at different times and at different places. I understand your point is “this is one antenna per person.” But let me give you two hypotheticals and ask you if they come out differently. One is the antenna goes to a house full of people, friends, alright, so it’s kind of public, it seems to me. And the other is it goes to a bar, which charges admission for everybody to come in and watch your signal from that one antenna to the bar. Are you still okay in that, even though the ultimate recipients of your retransmitted signal may not be? When I say “are you okay”, I mean are you violating the statute at that point, because you’re sending something to, in my extreme example, a commercial establishment, which is then selling it to the public?

Baker begins by correctly pointing out that the bar would be liable for publicly performing the broadcast, but then speculates that the worst FilmOn X could face is secondary liability, depending on its level of awareness of the bar’s activities and whatever specific facts are present.

Baker is wrong on this second point. FilmOn X would be liable for publicly performing works under Judge Cogan’s hypothetical. What’s more, it would be liable even under the Cablevision/Aereo “unique copy” interpretation of the Copyright Act’s public performance provisions that FilmOn X is relying on to escape liability. This is just one more reason why the Ninth Circuit should reject the argument.

A public performance includes each link in the transmission chain

Prior to the 1976 Copyright Act, the Supreme Court had held that CATV services, which picked up broadcast television signals and retransmitted them to subscribers, did not implicate the broadcasters’ public performance rights.1 Congress changed this with the new Act, bringing retransmissions within the scope of public performance (subject to several limitations and exceptions). Since then, courts have consistently held that this covers every intermediary that retransmits a performance.

The earliest and leading case comes from the Seventh Circuit. In WGN Continental Broadcasting v. United Video, the court began its analysis of the dispute by disposing of a threshold argument: whether United Video, a satellite common carrier, could be liable for publicly performing television superstation WGN’s works even though it was only an intermediary retransmitting the signal to other cable providers.2 The court said it could, in part because the Copyright Act contained a passive carrier exemption that would be rendered superfluous if all intermediary carriers were exempt from liability as a matter of rule. WGN ultimately held that a service “cannot be immune just because [it] does not retransmit [a] signal directly to the public” but instead transmits the signal to an actor who, in turn, publicly performs the broadcast.

Within two years, WGN would be favorably cited outside the Seventh Circuit. In Hubbard Broadcasting v. Southern Satellite Systems,3 later affirmed by the Eighth Circuit,4 the court adopted the reasoning of WGN and held that “a transmission is a public performance whether made directly or indirectly to the public and whether the transmitter originates, concludes or simply carries the signal. There is simply no practical basis for excluding certain transmitters from copyright liability based solely on their position in the distribution chain.”

The Second Circuit came to the same conclusion in NFL v. PrimeTime 24 Joint Venture.5 There, it said that “the most logical interpretation of the Copyright Act is to hold that a public performance or display includes ‘each step in the process by which a protected work wends its way to its audience.'”6

That gives us three circuits (and at least one additional district court in a separate circuit7 who have considered the issue and come to the same conclusion.

But what about the Ninth Circuit, whose holdings are binding on the FilmOn X litigation? The Circuit does not appear to have weighed in on the topic. Unless you ask the Second Circuit.

In PrimeTime 24 Joint Venture, after discussing the various decisions above that stood for the proposition that any retransmission of a public performance is itself a public performance, the Second Circuit said, “The Court of Appeals for the Ninth Circuit has suggested a different result.” It cited to Allarcom Pay Television v. General Instrument,8 noted that the decision received a good deal of “non-judicial criticism”, and ultimately gave “the decision little weight largely because it contains no analysis of the Copyright Act.”

But the Second Circuit read Allarcom wrong. According to the Second Circuit, when Allarcom was considering whether the Copyright Act preempted the state law at issue, the court said that “copyright infringement does not occur until the signal is received by the viewing public.” That’s not what Allarcom said. Allarcom actually said that the Copyright Act does not preempt extraterritorial acts of infringement. And under Ninth Circuit precedent, an act of infringement that does not occur entirely within the United States is considered extraterritorial. In other words, Allarcom didn’t say the retransmission was not infringing because it was not a public performance, it said it was not infringing because it was not received within the United States. Luckily, the Ninth Circuit is not bound to follow the Second Circuit’s interpretations of its own precedent.

Ditch the “Rube Goldberg” public performance interpretation

What this means for FilmOn X (and, by extension, Aereo) is that it would be liable for publicly performing, even under its own interpretation of the public performance provisions. If we go all the way back to Cablevision,9 the origin of the public performance interpretation that FilmOn X and Aereo are relying on, we find support for this conclusion. In Cablevision, the Second Circuit stated

[U]nder the transmit clause, we must examine the potential audience of a given transmission by an alleged infringer to determine whether that transmission is “to the public.” And because the RS-DVR system, as designed, only makes transmissions to one subscriber using a copy made by that subscriber, we believe that the universe of people capable of receiving an RS-DVR transmission is the single subscriber whose self-made copy is used to create that transmission.

Cablevision assumes that the single subscriber equals a single person, making the transmission a private performance. But as Judge Cogan noted in the above quote, that single subscriber could be a bar full of people from the general public — and under WGN, Hubbard, and PrimeTime 24, that makes Cablevision, Aereo, and FilmOn X’s performances public ones.

So FilmOn X cannot escape liability for public performances even under the convoluted, inexplicably narrow interpretation of the public performance provisions that it wants the Ninth Circuit to accept. This provides only all the more reason for the court to instead rely on the plain meaning of the Copyright Act.

Neither Aereo nor FilmOn X can control whether their transmissions end up in a public place because they exert no control over who signs up for their service. The services are offered to anyone and everyone in exchange for a fee — the performances are transmitted, in other words, to the general public. This seems to me a far simpler and sensical interpretation of the public performance provisions than the dense thicket that Aereo has led us into.10 And it still leaves room for private performances to exist. A transmission to oneself is a private performance (something that is becoming increasingly more common with devices such as the Slingbox) as is a transmission to one’s family or immediate social group. But once one goes outside that intimate circle and starts transmitting to anyone, come one come all, it becomes very difficult to say with a straight face that that performance is not “to the public.”

Footnotes

  1. Fortnightly v. United Artists Television, 392 U.S. 390, (1968);Teleprompter v. Columbia Broadcasting System, 415 U.S. 394 (1974). []
  2. 693 F.2d 622 (7th Cir. 1982). []
  3. 593 F.Supp. 808 (D. Minn. 1984). []
  4. 777 F.2d 393 (8th Cir. 1985). []
  5. 211 F.3d 10 (2nd Cir. 2000). []
  6. Quoting David v. Showtime/The Movie Channel, 697 F.Supp. 752, 759 (S.D.N.Y.1988). []
  7. National Cable Television v. Broadcast Music, Inc., 772 F.Supp. 614, 651 (D.DC 1991). []
  8. 69 F.3d 381 (9th Cir. 1995). []
  9. Cartoon Network v. CSC Holdings, 536 F.3d 121 (2nd Cir. 2008). []
  10. Cf., WNET v. Aereo, 712 F.3d 676, 698 (2nd Cir. 2013) (J. Chin, dissent), “Giving the undefined term ‘the public’ its ordinary meaning, a transmission to anyone other than oneself or an intimate relation is a communication to a ‘member[] of the public,’ because it is not in any sense ‘private'”; Jane Ginsburg, WNET v. Aereo: The Second Circuit Persists in Poor (Cable)Vision, The Media Institute (April 23, 2012), “when a transmission service, be it radio, cable, or Internet streaming, is offered to the public, every individual recipient is a ‘member of the public'”; Report on Copyright Law Revision, H.R.Rep. No. 94-1476, at 64-65 (1976), “a performance made available by transmission to the public at large is ‘public’ even though the recipients are not gathered in a single place …. The same principles apply whenever the potential recipients of the transmission represent a limited segment of the public, such as the occupants of hotel rooms or the subscribers of a cable television service.” []

Google and friends spin search piracy study — Vox Indie’s Ellen Seidler thoroughly eviscerates the white paper on search engines’ role in facilitating online infringement released earlier this summer by the CCIA. This is the same report that argued on the one hand that search engines don’t drive traffic to infringing content, and, on the other hand, the solution to driving traffic to legitimate content is to take advantage of search engines.

 — An article at Volokh Conspiracy asked earlier whether we should expect an extension of copyright term in 2018. Why this prediction? Because in the make-believe world of copyright skeptics, copyright term is extended every 20 years.

Internet Policy Task Force Is (Still) Not Sending Cover Artists to Jail — In July, the Department of Commerce’s Internet Policy Task Force released a comprehensive green paper looking at the current state of copyright law. Included within were several recommendations, among them, an alignment of criminal penalties for unauthorized public performances with the existing penalties for reproduction and distribution. A week later, the Washington Post weirdly reported this as news that the Obama Administration wanted to revive SOPA; it also resurrected the entirely bogus claim that the recommendation would land Justin Bieber in jail. Future of Music Coalition legal intern Michelle Davis sets the record straight.

Your Big Break: Hollywood Studio Programs for Emerging Writings — Looking to be a screenwriter? The Credits has put together a list of writing programs offered by major film studios that will help you hone yours skills. And if you haven’t checked out The Credits in general yet, do take a look, as the site has been cranking out some great stories that take a look behind the scenes at making television and film.

Why We Don’t Need More Domain Extensions — As ICANN inches closer to unleashing hundreds of new generic top-level domains, Jonathan Bailey takes a look at some of the potential problems that could arise and wonders if they outweigh any potential benefits.

When You Can’t Tell Web Suffixes Without a Scorecard — The NY Times has more on the new top-level domains. “‘You are creating a business, like derivatives on Wall Street, that has no value,’ says Esther Dyson, a technology investor who served as the founding chairwoman of Icann. ‘You can charge people for it, but you are contributing nothing to the happiness of humanity.'”

The news hit on Friday that recording artist Robin Thicke (along with Pharrell Williams and Clifford Harris) has filed a lawsuit against Bridgeport Music and Marvin Gaye’s family seeking a declaration that his hit song “Blurred Lines” did not infringe the copyright in Funkadelic’s song “Sexy Ways” or the Marvin Gaye classic “Got to Give it Up.”

A complaint for declaratory relief is a pre-emptive filing to seek judicial determination of contested legal rights when litigation is anticipated; in this case, Thicke alleges that both Bridgeport and Gaye notified him that “Blurred Lines” infringed their copyright and if he didn’t provide a monetary settlement, they intended “to initiate litigation for copyright infringement” against him.

The filing has attracted considerable attention. While it is not clear what the basis for the infringement claims are, it does not appear to be the case that “Blurred Lines” sampled any portion of the two songs, nor did it copy any melody or lyrics. Instead, the claims would appear to be directed toward the similarities in style and groove of the tunes.1

It would make for an interesting infringement analysis — but if that’s what you were expecting to read here, you’ll be disappointed.

Instead, I want to look at a statement in one of the news stories covering the story. In the Quartz, writer Adam Pasick says, “It’s pretty well established by now that unauthorized sampling—the act of copying an actual recorded sound, no matter how brief—is a no-no.”

This is incorrect.

I don’t mean to pick on Pasick, his remark is actually representative of a commonly held belief when we discuss copyright issues related to digital sampling. That belief typically starts with a 2005 Sixth Circuit court decision.

Substantial Similarity and Sound Recordings

But let’s back up for a second.

Generally, to show copyright infringement, you have to show first that you own a valid copyright and then that the alleged infringer engaged in actionable copying. The latter is an intensely fact specific inquiry. Very broadly, courts will look at whether the two works are substantially similar. This is a qualitative and quantitative question; that is, did the defendant copy enough of the protectable elements of the plaintiff’s work to constitute infringement? Recall that copyright only protects expression — not ideas, facts, or stock elements — so not all copying is actionable copying. This is also typically where courts will consider whether the copying is de minimis — too trifling for the law to be concerned with.2

That is what the Middle District Court of Tennessee did in Bridgeport Music v. Dimension Films when confronted with a copyright infringement case involving the unauthorized digital sampling of a two-second portion of “Get off Your Ass and Jam”. (Yes, the same Bridgeport Music that is alleged to have complained to Thicke of infringement here.) The court concluded that “the sample here does not rise to the level of a legally cognizable appropriation” and dismissed the infringement claims.

On appeal, the Sixth Circuit reversed the district court’s ruling and departed from the traditional infringement inquiry with regard to sound recordings.3

This is one of the first cases involving digital sampling to reach an appellate court, arising from Bridgeport Music’s original complaint against over 800 defendants.4 The court, feeling a prerogative to establish a “bright-line test” to add “clarity to what constitutes actionable infringement with regard to the digital sampling of copyrighted sound recordings”, held that the doctrines of de minimis and substantial similarity don’t apply to digital sampling of sound recordings — any taking of a sound recording, no matter how small or how much it is altered, is infringement.

The Sixth Circuit premised this holding largely on the language of the Copyright Act’s provision dealing with the exclusive right of a sound recording’s copyright owner. The relevant section states that “The exclusive rights of the owner of copyright in a sound recording … do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.”5 The court took this to mean that “By using the words ‘entirely of an independent fixation’ in referring to sound recordings which may imitate or simulate the sounds of another, Congress may have intended that a recording containing any sounds of another recording would constitute infringement.”

Burning Bridgeport

This holding has been cited far more in academic literature (the vast majority critical of it) than by other courts — the court’s expository declaration, “Get a license or do not sample,” raised the hackles of many who are predisposed to see copyright as an impediment to creativity. But the decision deserves criticism for the far simpler fact that it is wrong. Professor Nimmer, author of one of the seminal treatises on copyright, calls the holding a logical fallacy: “By validating entire sound-alike recordings, the quoted sentence contains no implication that partial sound duplications are to be treated any differently from what is required by the traditional standards of copyright law — which, for decades prior to adoption of the 1976 Act and unceasingly in the decades since, has included the requirement of substantial similarity.”6

And at least one federal court has agreed with Nimmer’s view.7 The Southern District Court of Florida devoted a significant amount of space to explaining why it refused to follow Bridgeport’s lead in removing the substantial similarity requirement for sound recording claims in Saregama India v. Mosley.8 There, hip-hop producer Timbaland was sued for infringement after he used a one-second snippet of the Indian sound recording “Bagor Mein Bahar Hai” in the song “Put You on Your Game”, recorded by rapper The Game.

In its analysis of the infringement claim, the court first noted that “the Sixth Circuit’s decision to carve out an exception for sound recordings has not been followed in this Circuit. Indeed, the Eleventh Circuit imposes a ‘substantial similarity’ requirement as a constituent element of all infringement claims… Therefore, although factually similar, the Bridgeport court’s exception for sound recordings presents a departure from Eleventh Circuit precedent.”

It then rejected Saregama’s argument to adopt the Bridgeport approach, taking the time to explain that it is not clear “why the Bridgeport court’s reading of Section 114(b) follows inexorably from its text.” After its own analysis, the District Court concluded that “Section 114(b) does not seem to support the distinction between sound recordings and all other forms of copyrightable work that the Bridgeport court imposes.”

So, the legal effect of Bridgeport on digital sampling has been vastly overstated. And, as some have observed, the effect of the legal decision on industry practice has also been overstated.9

Digital Sampling and Copyright Law

In other words, it is inaccurate to say that it is “pretty well established” that “the act of copying an actual recorded sound, no matter how brief… is a no-no.” In the seven years since Bridgeport, courts outside the Sixth Circuit (which, it should be noted, is not a particularly influential jurisdiction when it comes to copyright law to begin with) apparently continue to look at substantial similarity between an original sound recording and the sampling work, including considering whether the use is de minimis.

And we haven’t even gotten to fair use yet. Despite some misconceptions, the Sixth Circuit in Bridgeport hadn’t decided whether digital sampling can be fair use. As the court said, “Since the district judge found no infringement, there was no necessity to consider the affirmative defense of ‘fair use.’ On remand, the trial judge is free to consider this defense and we express no opinion on its applicability to these facts.” There’s no reason why the fair use defense would not apply to sound recordings the same way it would apply to other copyrightable subject matter — and considering how expansively courts have applied the defense recently,10 it would not be surprising to see a vast number of unauthorized samples be able to successfully claim fair use.

It will be interesting to see how Thicke fares in his declaratory relief suit — though it is often the case that high-profile sampling lawsuits like these are quietly settled or quickly dismissed, so it’s not likely that we’ll see any substantive court rulings. But it’s important to keep in mind that it is simply not the case that there is any bright-line rule against digital sampling. The Bridgeport decision is an overrated aberration; copyright’s traditional doctrines are normally flexible enough to distinguish between appropriate use of existing works and misappropriation.

Footnotes

  1. I immediately thought of Gaye’s “Got to Give it Up” the first time I heard “Blurred Lines”, as did many others based on the comments on various sites discussing the story — though, aside from the use of falsetto singing in both, I see little similarity with the Funkadelic song. See Ben Sisario, “Songwriters Sue to Defend a Summer Hit”, New York Times (August 16, 2013) for statements indicating “Got to Give it Up” served as an inspiration for the song, but nothing more. []
  2. 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[F][5] at 13-146 (1996); Newton v. Diamond, 349 F.3d 591, 594 (9th Cir. 2003); Ringgold v. Black Entertainment Television, 126 F.3d 70, 74 (2nd Cir. 1997); MiTek Holdings v. Arce Engineering, 89 F.3d 1548, 1560 (11th Cir. 1996). []
  3. Bridgeport Music v. Dimension Films, 410 F.3d 792 (6th Cir. 2005). []
  4. See Tim Wu, “Jay-Z Versus the Sample Troll: The shady one-man corporation that’s destroying hip-hop“, Slate (Nov. 16, 2006), for one take on Bridgeport’s operations and these lawsuits. []
  5. 17 USC § 114(b). []
  6. 4-13 Nimmer on Copyright § 13.03. Fellow copyright treatise author William Patry has also criticized Bridgeport’s holding. See The Sixth Circuit Reaffirms Controversial Sound Recording Opinion. []
  7. Interestingly, a New York state court also sided with Nimmer when asked to adopt Bridgeport’s rule in a case involving digital sampling of a common law copyright. EMI Records Ltd v Premise Media Corp, 2008 N.Y. Misc. LEXIS 7485(N.Y. Sup. Ct. 2008). []
  8. 687 F. Supp. 2d 1325 (S.D. Fla. 2009). []
  9. See, for example, Thomas W. Joo, Remix Without Romance, 44 Connecticut Law Review 415 (2011). []
  10. See, for example, Cariou v. Prince: Transforming Fair Use; Seltzer v. Green Day, Nos. 11-56573 and 11-57160 (9th Cir. 2013). []

Obama’s intellectual property chief steps down — A sincere thank you and best wishes to Victoria Espinel, who, it was announced this week, is stepping down from her post as Intellectual Property Enforcement Coordinator. Espinel was the first IPEC, appointed late 2009. Her office released a Joint Strategic Plan in June, detailing its work and goals over the next three years.

The ‘Breaking Bad’ example for why illegal downloading must stop — One of the many ways copyright benefits the public: “Since production began in 2007, “Breaking Bad” has spent an estimated $60 million to $70 million on goods, services and wages for crew members in New Mexico — not counting wages paid to actors, writers and directors.” The same holds true for any other television show or film being made. (And no Breaking Bad spoilers please, I’m still catching up on Netfilx!)

“Open Source” Doesn’t Mean There’s Not a License — Open source and other copyleft licenses are often thought of as alternatives to copyright, but they rely upon copyright to exist. Particularly, the noneconomic control that copyright provides to creators; it’s just that in the case of open source, the control is targeted at such things as limiting commercial use or requiring downstream modifications to be released to the public under similar license terms.

Tun-Jen Chiang: Rehabilitating the Property Theory of Copyright’s First Amendment Exemption — “A continuing controversy in copyright law is the exemption of copyright from First Amendment scrutiny. The Supreme Court has justified the exemption based on history and the intentions of the Framers, but this explanation is unpersuasive on the historical facts. There is an alternative explanation: copyright is property, and private property is generally exempt from scrutiny under standard First Amendment doctrine.”

The Night Eric Schmidt Joked About Killing Newspapers — “I said to him, ‘It’s going to be on your tombstone: “I killed newspapers.”‘ And he said, ‘No, I love newspapers.’ And I said, ‘But you’re taking all of our money!’ And he said, like a good CEO, ‘It’s our money now.’”

Cross-posted on the Law Theories blog.

As a follow-up to my last post about why copyright is a right and fair use is a privilege, I wanted to respond to some of the issues brought up by people on the ‘net about what I had written. Let me start by saying that I understand that, normatively, some are upset by the very notion that copyright is a full-fledged right while fair use is relegated to being merely a privilege. A right sounds so much more important than a privilege, and it makes fair use sound like some second-class citizen to call it the latter. I think some people dismissed my post completely just based on its title—the reasoning didn’t matter since the conclusions weren’t what those people wanted to hear. I think such closed-mindedness is unfortunate and counterproductive, and if we don’t stop to understand what others are saying—even when we don’t like it—we’re doomed forever to talk past each other.

One person brushed off my post as arguing semantics and meaningless labels, but I think that the feedback I got from both sides of the debate shows that labels matter significantly to people. Besides, why would a person bother to reach out and say that my labels are unimportant unless that person thinks that labels are actually important? Labels matter. For example, I don’t think that Mike Masnick refers to copyright as a “monopoly privilege” because he thinks labels don’t matter. I think he specifically chooses both of those words because of the negative connotations associated with each. There’s nothing wrong with caring about labels, of course, though I do fault those such as Masnick who appear to do so opportunistically and only for rhetorical effect. When discussing legal terms of art, I prefer precision over perception. I don’t get the sense that Masnick feels the same way.

This passage from Professor Tom Bell exemplifies such thinking:

Nonetheless, for right or wrong, copyright represents an exception to the general rule that we can freely speak the truth. It thus won’t do to call copyright simply a “property right.” We should at least append the qualifying phrase, “and an anti-property right,” because copyright’s power comes at the expense of our rights in our pens, presses, and throats. Should we also call copyright an anti-person right? It endures only at cost to our liberties, after all. At any rate, copyright hardly deserves the honorable title, “property”; we would do far better to call it “privilege.”1

Deciding whether something is a privilege based on our own subjective view as to whether the thing is “honorable” strikes me as an imprecise and inconsistent way to classify things. What makes more sense is a system that objectively classifies things, such as Hohfeld’s fundamental jural relations. Those who claim that copyright is a privilege and fair use is a right seem to be basing that view on nothing more than their gut feeling about the relative importance of each. The normative view that fair use shouldn’t be called a privilege because it’s just too important, I think, is based on the erroneous supposition that privileges are somehow less important than rights. Legally speaking, that’s not necessarily the case. This is demonstrated by the fact that a fair user’s privilege trumps a copyright owner’s right.

In fact, many of the “rights” that we hold most dear, guaranteed by the Bill of Rights, are not even rights in the Hohfeldian sense. The “Bill of Rights” should more accurately be called the “Bill of Privileges and Immunities.”2 Some faulted me for not mentioning the First Amendment in my post, but the fact that fair use is imbued with constitutional significance doesn’t change the fact that it’s a privilege. Moreover, I think that people are under the common misperception that the First Amendment creates Hohfeldian rights. It doesn’t. The First Amendment tells Congress that it can’t make any laws abridging the freedom of speech. In Hohfeldian terms, this creates in the government a disability and in us an immunity from laws that abridge our freedom of speech.3

One person expressed concern over the last sentence of my post where I said: “A rightholder, or anyone else for that matter, can make the exercise of a would-be fair user’s privilege as easy or as difficult as he likes—even impossible if he so wishes.” I think the point is rather obvious, but I’ll give an example. If I write a novel on my typewriter, I can take that manuscript and lock it up in my safe. Another has the privilege of making fair use of my novel, even if that privilege is somewhat diminished as the novel in unpublished, but that privilege doesn’t arm the privilege-holder with any sort of legally enforceable claim against me that I make the novel available to him so he can exercise his privilege. I can lock it up forever or loan it to everyone else in the world but him without any liability since I am under no duty of noninterference with respect to the would-be fair user.

This is not to say that the constitutional underpinnings of fair use are unimportant. They are. The immunities granted to us by the First Amendment have significant repercussions when it comes to the privileges we have, such as fair use, vis-à-vis the rights granted to copyright owners. As unnatural as it may seem to the uninitiated, an immunity, or even a privilege for that matter, can be a much more powerful weapon than a right. Great rewards await those who can get past the labels to examine the substances beneath, and to that end, in this post I’ll explain how the First Amendment implications of fair use operate doctrinally.

Ad Hoc Balancing vs. Definitional Balancing

The interaction of copyright law and the First Amendment is a favorite subject of mine, and I’d like to take a step back and discuss the Supreme Court’s current approach to the subject. It’s helpful to start with how First Amendment challenges to speech restrictions work generally. The First Amendment provides that “Congress shall make no law . . . abridging the freedom of speech . . . .” Surely that means that all speech is protected, right? The answer, it turns out, is that not all speech is treated the same way, and, despite the minority view held by some absolutists, the First Amendment does not protect all speech. The tricky part is figuring out whether a particular instance of speech is protected or not.

Take, for example, the Sherman Act, which makes illegal agreements in restraint of trade.4 How should a court proceed if a defendant claims that the agreement he made with his codefendant is speech protected by the First Amendment, even if it’s in restraint of trade? The answer, as is so often the case in the law, is that the competing interests have to be balanced; the nonspeech interests have to be weighed against the speech interests. But where to do this balancing? The Supreme Court has identified certain types of speech that require a court to do a balancing of interests based on the particular facts of the case before the court. For other types of speech, the Court has found that no such balancing is necessary since the weighing of interests has already been done when the statute making that speech unlawful was promulgated. The former approach is referred to as ad hoc balancing, while the latter approach is referred to as categorical or definitional balancing.

Staying with the context of antitrust law, take the example of FTC v. SCTLA.5 There, a group of lawyers who represented indigent criminal defendants in Washington, D.C., agreed that they would not accept any new cases unless and until their fees were increased. The lawyers got their fee increase, but the FTC filed a complaint against them alleging that their group boycott was in violation of the antitrust laws. The lawyers argued that their concerted action was expression protected by the First Amendment. The Court of Appeals for the District of Columbia Circuit agreed, finding that such boycotts were significantly expressive such that an ad hoc balancing of the competing interests presented in the particular case was necessary. The Supreme Court reversed, ruling instead that such boycotts were categorically unlawful:

In sum, there is thus nothing unique about the “expressive component” of respondents’ boycott. A rule that requires courts to apply the antitrust laws “prudently and with sensitivity” whenever an economic boycott has an “expressive component” would create a gaping hole in the fabric of those laws. Respondents’ boycott thus has no special characteristics meriting an exemption from the per se rules of antitrust law.6

Thus, the Supreme Court found that the antitrust laws at issue were balanced against countervailing First Amendment values at the definitional level, and this in turn meant that there was no need to do an ad hoc balancing of the competing interests, taking into account the particular defendants’ interests, as the Court of Appeals had done.

When analyzing a content-based restriction, which limits speech because of the idea or viewpoint conveyed, the Supreme Court has developed a two-tiered approach, separating low-value speech from high-value speech. A court first has to determine if the speech in question occupies a subordinate position in the spectrum of First Amendment values such that it is classified as low-value speech. If so, then that speech receives little or no First Amendment protection. As the Court famously noted over seventy years ago:

There are certain well-defined and narrowly limited classes of speech, the prevention and punishment of which have never been thought to raise any Constitutional problem. These include the lewd and obscene, the profane, the libelous, and the insulting or “fighting” words—those which by their very utterance inflict injury or tend to incite an immediate breach of the peace. It has been well observed that such utterances are no essential part of any exposition of ideas, and are of such slight social value as a step to truth that any benefit that may be derived from them is clearly outweighed by the social interest in order and morality.7

Over the years, the Court has added many other types of speech that are classified as low-value, such as express incitement, false statements of fact, commercial advertising, and child pornography. With low-value speech, the Court’s approach is that of definitional balancing where the weighing of competing interests is done at the rulemaking level. Rather than do an ad hoc balancing of a particular defendant’s free speech interests, the Court instead looks at the class of speech at issue as a whole to determine whether it is protected by the First Amendment or not. Take, for example, obscenity, where the Court has established a three-part test for determining whether speech is obscene.8 So long as a law regulating obscenity tracks the Court’s test, a First Amendment challenge of that law will necessarily fail—the First Amendment values have already been balanced by the Court at the definitional level.

The advantage of this definitional balancing is that courts down the road need only to apply the rule without doing any sort of ad hoc balancing based on the facts peculiar to the particular defendant before the court. It’s much easier to apply a general test than it is to consider the free speech interests of any given defendant. If the speech at issue does not fall into any of the classes of low-value speech, then it is high-value speech that receives significant First Amendment protection via an ad hoc balancing of the competing interests. A content-based restriction of high-value speech is analyzed under the rubric of strict scrutiny: The law at issue will be presumed unconstitutional, and it will only be upheld if it is “necessary to serve a compelling state interest and is narrowly drawn to achieve that end.”9

The Supreme Court has also created a framework for analyzing a content-neutral restriction, which regulates speech without reference to its content. The primary example of a content-neutral regulation is a time, place, or manner restriction. For example, a law that regulates the maximum volume of amplified music permissible at a city-owned band shell is content-neutral since, though it regulates speech, it does so without regard to the ideas or viewpoints being expressed. A content-neutral regulation is analyzed under the rubric of intermediate scrutiny: For the law at issue to be upheld, it “must be narrowly tailored to serve the government’s legitimate, content-neutral interests,” though “it need not be the least restrictive or least intrusive means of doing so.”10 This too is an ad hoc balancing of competing interests.

Thus, the Supreme Court’s approach to analyzing the constitutionality of a law that affects speech begins with classifying the law as being either content-neutral or content-based. If it’s content-neutral, then the ad hoc balancing of intermediate scrutiny is applied to it to determine whether the speech is protected by the First Amendment or not. If the speech interests outweigh the nonspeech interests, then it’s protected, and if the nonspeech interests outweigh the speech interests, then it’s not. If the law in question is content-based, the determination has to first be made as to whether the speech is classified as low-value speech or high-value speech. If it’s low-value speech, then the balancing has already been done definitionally at the rulemaking level, and if it’s high-value speech, then the ad hoc balancing of strict scrutiny is applied. I’m greatly simplifying things here, but these are the broad strokes.

Nimmer and the Definitional Balancing of Copyright

So how does copyright law fit into this framework? Professor Melville Nimmer published a seminal journal article in 1970 asking just that question.11 The answer, in Nimmer’s opinion, lay in definitional balancing. Professor Neil Netanel, whose recent law review article I recommended in last week’s Friday’s Endnotes on Copyhype, explains Nimmer’s definitional balancing approach:

Nimmer argued that the tension between copyright and the First Amendment can be satisfactorily resolved, even if it cannot be eliminated. His proffered solution was a method for balancing speech and non-speech interests that he labeled “definitional balancing.” *** As Nimmer described that methodological approach, a court considering whether a given law unconstitutionally abridges speech weighs the non-speech interests that the law aims to serve against the speech interests that the law burdens. Based on that assessment, the court then propounds generally applicable rules governing which types of speech may give rise to liability under the law in question and which must enjoy a First Amendment privilege.12

Nimmer had published a law review article about definitional balancing in 1968,13 focusing on the then-recent Supreme Court opinion in New York Times v. Sullivan where the Court applied definitional balancing to defamation law.14 While we may take the idea of definitional balancing for granted now, at the time Nimmer was writing his articles it was a relatively novel approach to First Amendment jurisprudence. Nimmer’s view that definitional balancing could be applied to copyright law was certainly ahead of its time. Nimmer located the definitional balancing internally to copyright law within the idea/expression dichotomy, the fair use doctrine, and the constitutional fiat that the copyright term be for a limited time. In Nimmer’s view, there was no need to do an ad hoc balancing when analyzing a First Amendment challenge to a copyright law because these internal doctrines already balanced First Amendment values at the definitional level.

Nimmer’s definitional balancing approach to copyright was first adopted by the Supreme Court in its 1985 opinion in Harper & Row.15 The issue there was whether the defendant’s use of a few hundred words from an unpublished manuscript of President Ford’s memoirs was fair use. In the Court’s opinion, the Second Circuit below had correctly noted “that copyright’s idea/expression dichotomy strikes a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression. No author may copyright his ideas or the facts he narrates.”16 The Court rejected the defendant’s argument that since the purported fair use involved a matter of great public concern, the traditional fair use test was inappropriate to balance the competing interests:

In view of the First Amendment protections already embodied in the Copyright Act’s distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use, we see no warrant for expanding the doctrine of fair use to create what amounts to a public figure exception to copyright. Whether verbatim copying from a public figure’s manuscript in a given case is or is not fair must be judged according to the traditional equities of fair use.17

Thus, the Supreme Court declined the invitation to apply an ad hoc balancing to the facts of the case at hand, instead finding that the Copyright Act and the First Amendment were balanced at the definitional level through the idea/expression dichotomy and the fair use doctrine. The Court thus imbued these two doctrines with constitutional significance, and it created a dividing line between speech that is protected by the First Amendment and speech that is not. Speech that is fair use or that appropriates only facts is protected by the First Amendment, while speech that appropriates expression but which is not fair use is not.

But the Court’s adoption of definitional balancing in Harper & Row did not stop many commentators from felling many trees while suggesting that ad hoc balancing was the better approach to weighing free speech interests against those sought to be promoted by copyright. For example, Professors Mark Lemley and Eugene Volokh argued that copyright is “a form of content-based, government-imposed speech restriction. The mere fact that the restriction is denominated a ‘property right’ should not exempt it from conventional First Amendment scrutiny.”18 Since in their view copyright is a content-based restriction, that scrutiny to be applied would therefore be strict. Similarly, Professor Neil Netanel has argued that “under the category approach that has developed since the Nimmer article was published, copyright law constitutes content-neutral speech regulation that should be subject to heightened, but not strict, scrutiny.”19 Netanel would place copyright “within a subcategory of content-neutral speech restriction that courts have subjected to considerably more rigorous scrutiny.”20

The Supreme Court has declined to follow the suggestion made by commentators that ad hoc balancing is the proper way to approach First Amendment challenges to copyright laws, and it has instead continued down the path of definitional balancing first adopted in Harper & Row. The two most recent opinions where the Court has discussed this are Eldred v. Ashcroft in 2003 and Golan v. Holder in 2012.21 I wrote about the First Amendment implications of these two opinions in a prior post.

In Eldred v. Ashcroft, the Court analyzed a First Amendment challenge of the Copyright Term Extension Act (“CTEA”), which extended by 20 years the copyright terms of future and existing works. The petitioners had argued that the CTEA was a content-neutral regulation warranting the ad hoc balancing of intermediate scrutiny. The Supreme Court disagreed: “We reject petitioners’ plea for imposition of uncommonly strict scrutiny on a copyright scheme that incorporates its own speech-protective purposes and safeguards.”22 The Court reiterated its statement from Harper & Row that the “idea/expression dichotomy strikes a definitional balance between the First Amendment and the Copyright Act,” and it again cited the fair use doctrine as providing “considerable latitude for scholarship and comment.”23 In summation, the Court wholeheartedly adopted Nimmer’s definitional balancing:

The First Amendment securely protects the freedom to make—or decline to make—one’s own speech; it bears less heavily when speakers assert the right to make other people’s speeches. To the extent such assertions raise First Amendment concerns, copyright’s built-in free speech safeguards are generally adequate to address them. We recognize that the D. C. Circuit spoke too broadly when it declared copyrights “categorically immune from challenges under the First Amendment.” But when, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary.24

I, and others, have dubbed this the “traditional contours” test. The Court is saying that so long as a copyright statute does not disturb the traditional contours, i.e., the idea/expression dichotomy and the fair use doctrine, then that statute will not be subjected to any sort of ad hoc balancing through the mechanism of heightened First Amendment scrutiny. Instead, the statute is already balanced at the definitional level via the internal safeguards of the traditional contours. Despite being a straightforward statement of the law, the traditional contours test was wildly misconstrued in the commentary, and a flurry of scholarly writing came out wondering what was within the traditional contours and what was without. The view was that if something could be identified as being outside of the traditional contours, then that would trigger heightened scrutiny and its concomitant ad hoc balancing.

Such thinking led to a First Amendment challenge to Section 514 of the Uruguay Round Agreements Act in Golan v. Holder. Section 514 granted copyright protection to foreign works that had previously been in the public domain in the United States. Petitioners argued that pulling works out of the public domain transgressed the traditional contours and thus required the application of heightened scrutiny to Section 514. The Supreme Court rejected the argument:

Given the “speech-protective purposes and safeguards” embraced by copyright law, we concluded in Eldred that there was no call for the heightened review petitioners sought in that case. We reach the same conclusion here. Section 514 leaves undisturbed the “idea/expression” distinction and the “fair use” defense.25

The Court made clear in Golan what it thought it had made clear in Eldred, namely, that the traditional contours only include the idea/expression dichotomy and the fair use doctrine. And since these traditional contours balance the First Amendment with the Copyright Act at the definitional level, no ad hoc balancing through the application of heightened scrutiny is necessary. Thus, the Court’s current approach to a First Amendment challenge to a copyright law is to look at whether the law in question has altered the traditional contours of the idea/expression dichotomy and the fair use doctrine. If not, then the law passes constitutional muster without the need to do any ad hoc balancing, and if so, then ad hoc balancing is to be applied.

Netanel and the DMCA Anticircumvention Provisions

Not surprisingly, since the Court reiterated its statement of the traditional contours test in Golan, commentators have started constructing their arguments to work within that framework. One example is in the recent law review article by Professor Neil Netanel that I mentioned above. In the article, Netanel’s reading of the traditional contours test comports with my own:

Golan strongly suggests that it is by virtue of the idea/expression dichotomy and fair use privilege that copyright law not only is immune from First Amendment scrutiny but also comports with First Amendment requirements. Following Golan, Congress may apparently extend and expand copyright law as it wishes, without giving rise to First Amendment scrutiny, so long as it leaves the idea/expression dichotomy and fair use defense “undisturbed.” But if a Copyright Act amendment were to eliminate, eviscerate, or otherwise disturb the idea/expression dichotomy or fair use defense, the amendment should be stricken down as failing to pass First Amendment muster . . . .26

Netanel qualifies this last statement by noting that such a statute, which alters the traditional contours, wouldn’t necessarily be struck down since “Congress might enact some alternative provision that adequately accommodates constitutional protections of free speech” in the same way the traditional contours do.27 But under the traditional contours test, a statute that alters the idea/expression dichotomy or the fair use doctrine would certainly be subjected to ad hoc balancing under the imposition of heightened First Amendment scrutiny.

Netanel identifies the DMCA anticircumvention provisions as altering the traditional contours since courts have interpreted them to “make no exception for circumventing access controls or hybrid technological-protection measures when needed to engage in fair use.”28 Instead, Netanel notes, courts read the DMCA “to preserve fair use only as a defense to a claim for traditional copyright infringement.”29 As an example of this, Netanel cites the Second Circuit opinion in Universal v. Corley where the court of appeals held that there is no fair use defense to a DMCA violation.30 The Second Circuit there had also stated that fair use is not required by the First Amendment, and Netanel faults the court of appeals for this: “After Golan and Eldred, that statement is no longer good law. As those rulings make clear, the availability of the fair use defense is a necessary condition for copyright law to survive a First Amendment challenge.”31

Netanel is overstating the traditional contours test. The test merely states that the existence of the traditional contours is sufficient to avoid the need for ad hoc balancing. If either of the traditional contours is altered, then a court is to engage in ad hoc balancing via the application of heightened scrutiny. But the traditional contours test does not say, as Netanel suggests, that the existence of both traditional contours is necessary to survive this ad hoc balancing. A statute could alter fair use yet still survive the subsequent application of heightened scrutiny. Thus, Netanel’s suggestion that “the availability of the fair use defense is a necessary condition for copyright law to survive a First Amendment challenge” is mistaken.

Netanel also takes issue with the Second Circuit’s statement in Corley that fair use “has never been held to be a guarantee of access to copyrighted material in order to copy it by the fair user’s preferred technique or in the format of the original.”32 “This argument raises a fascinating question,” Netanel posits, that even if “fair use secures a given speaker’s right to copy copyrighted material for a particular use, does that necessarily mean that the speaker is entitled to make a direct digital copy?”33 After stating that the case law offers no satisfactory answer, Netanel claims that “in light of Golan and other cases, the more plausible argument is that there must be a fair use defense to the DMCA anticircumvention prohibition, lest the DMCA run afoul of the First Amendment.”34

In support of this conclusion, Netanel cites a report from the Register of Copyrights which argues that effective fair use may not be possible without perfect digital copies. Moreover, Netanel cites a line of cases where it was held that foreclosing a particular medium of expression burdens free expression and gives rise to heightened First Amendment scrutiny. To this, Netanel argues that anything restrictive of a person’s use of a given technology for the communication of protected speech can give rise to heightened scrutiny as well. Netanel concludes that “the DMCA’s prohibition of the use of circumvention technology needed to engage in effective, constitutionally protected fair use would seem to run afoul of the First Amendment. . . . Under Golan’s definitional balancing approach, fair use copying should enjoy an absolute privilege against liability under the DMCA.”35

I think Netanel’s arguments miss the mark. First of all, the fair use defense codified in Section 107 by its terms applies only to prima facie violations of the rights granted to copyright owners in Section 106: “Notwithstanding the provisions of sections 106 . . . the fair use of a copyrighted work . . . is not an infringement of copyright.”36 The reason courts don’t apply fair use to infringements of other rights, such as the anticircumvention rights granted by the DMCA, is because the violation of those rights is not copyright infringement. Despite fair use not being a defense to a DMCA violation, Netanel is trying to make it one by cleverly sneaking it in the back door. He does this by playing the First Amendment trump card and claiming that the DMCA anticircumvention provisions have altered the traditional contours such that ad hoc balancing is necessary under the test articulated in Eldred and Golan.

The problem with this line of reasoning, I think, is that the DMCA has done no such thing. The traditional contours have not been affected, and fair use is still a perfect defense to a claim of copyright infringement. Part of the problem with Netanel’s approach is that he’s treating fair use as right, as demonstrated by his framing the question he’s trying to answer by presupposing that “fair use secures a given speaker’s right to copy copyrighted material for a particular use.” It does no such thing. As I mentioned at the outset of this post, just because fair use has a constitutional dimension, that doesn’t mean that it’s magically transformed from a privilege into a right in the Hohfeldian sense. It’s still a privilege that negates the duty one would otherwise have not to copy, and it creates in the copyright owner the correlative no-right, that is, the lack of a legally enforceable claim against another should he so copy.

Just because our exercise of the fair use privilege is protected by the First Amendment, that doesn’t mean we can violate the rights of others while making fair use of a given work. For example, think of my manuscript sitting in my locked safe. That the First Amendment protects another’s privilege to make fair use of it doesn’t negate his duty not to break into my safe. Fair use might relieve him of liability for my copyright claim should I sue him for copyright infringement, but it’s certainly not going to excuse him from liability for the tort and crime of breaking into my safe in the first place. The same can be said of the DMCA anticircumvention provisions. Fair use might absolve a person of liability for copyright infringement if he violates my anticircumvention rights and makes fair use of my work, but it’s not going to make his violation of the DMCA anticircumvention provisions disappear. The ends don’t erase the means.

Netanel is absolutely correct to argue that fair use is (or at least can be) speech protected by the First Amendment. The Supreme Court has made that clear in Harper & Row, Eldred, and Golan. I say “can be” because not all fair use is constitutionally protected speech. For example, the Supreme Court’s decision in Sony finding that certain time-shifting was fair use did not turn on application of the First Amendment.37 But just because fair use is speech protected by the First Amendment, it nonetheless remains only a privilege. And as a mere privilege, there is no duty of noninterference in others. A fair user has no legally enforceable claim against those that stand in his way as he attempts to make fair use of a given work. The First Amendment provides the fair user with only a shield, not a sword, and a fair user has but a privilege, not a right.

But this does not mean that a copyright law cannot be or should not be subjected to heightened First Amendment scrutiny, and the funny thing is, I actually agree with Netanel that ad hoc balancing should be applied to the DMCA anticircumvention provisions. I arrive at that conclusion by a different pathway. As I mentioned in my prior post about Eldred and Golan, I think that the Supreme Court has only applied the traditional contours test to statutes, such as the CTEA or Section 514 mentioned above, that define the scope of substantive copyright rights granted by Section 106. This makes sense because the traditional contours, i.e., the idea/expression dichotomy and the fair use doctrine, definitionally balance substantive copyright rights (such as the reproduction right) with countervailing First Amendment values. But when a statute doesn’t define the scope of the substantive copyrights rights—as the DMCA anticircumvention provisions do not—then it makes no sense to say that the statute is definitionally balanced by using reasoning that has been applied only to substantive copyright rights.

Thus, I think Netanel’s intuition that the DMCA anticircumvention provisions need to be subjected to ad hoc balancing is correct. This is so because the definitional balancing applied to substantive copyright rights, such as the reproduction right or the distribution right, tells us nothing about whether other rights, such as the anticircumvention rights, are balanced. Perhaps they are, or perhaps they are not. I also agree with Netanel that some flavor of intermediate scrutiny is appropriate since the DMCA anticircumvention provisions create only content-neutral restrictions. But there’s no need to frame the argument by saying that the DMCA anticircumvention provisions alter the traditional contours for the simple reason that the traditional contours test doesn’t apply to the rights created by the DMCA anticircumvention provisions since those rights are not substantive copyright rights. Like Netanel, I’ll pass for now on doing the actual analysis of whether the DMCA anticircumvention provisions pass the ad hoc balancing of heightened scrutiny, choosing instead to reflect on what the proper test should be for its own sake.

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Footnotes

  1. Tom W. Bell, Intellectual Privilege: A Libertarian View of Copyright 110-11 (2010). []
  2. See, e.g., Jay S. Bybee, Taking Liberties With the First Amendment: Congress, Section 5, and the Religious Freedom Restoration Act, 48 Vand. L. Rev. 1539, 1552 (1995) (“[W]e should observe that the Bill of Rights is not a bill of rights in any Hohfeldian sense, in any sense that people have claims enforceable against the government. Amendments Two through Eight are written as privileges and immunities, while the First Amendment is a disability.”); Scott R. Bauries, State Constitutions and Individual Rights: Conceptual Convergence in School Finance Litigation, 18 Geo. Mason L. Rev. 301, 316 (2011) (“Nearly all of the rules we cling to as ‘rights’ against legislation under the U.S. Constitution are really immunities, and many of the ‘negative duties’ we recognize are actually disabilities, because the legal relationships set up in the U.S. Constitution are overwhelmingly secondary rules.”). []
  3. See, e.g., Bybee, 48 Vand. L. Rev. at 1556 (“The First Amendment is a subject-matter disability . . . . [I]t puts a category of laws beyond the competence of Congress. The disability is so complete that Congress is expressly forbidden to enact . . . laws abridging . . . freedom of speech and press . . . . The First Amendment is a rule about rules.”); Restatement (First) of Property § 4 (1936) (“An immunity, as the word is used in this Restatement, is a freedom on the part of one person against having a given legal relation altered by a given act or omission to act on the part of another person.”). []
  4. See 15 U.S.C.S. § 1 (Lexis 2013) (“Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is hereby declared to be illegal.”). []
  5. FTC v. Superior Court Trial Lawyers Ass’n, 493 U.S. 411 (1990). []
  6. Id. at 431-32. []
  7. Chaplinsky v. New Hampshire, 315 U.S. 568, 571-72 (1942). []
  8. See Miller v. California, 413 U.S. 15, 24 (1973). []
  9. Arkansas Writers’ Project, Inc. v. Ragland, 481 U.S. 221, 231 (1987); see also United States v. Playboy Entm’t Group, 529 U.S. 803, 813 (2000) (“If a statute regulates speech based on its content, it must be narrowly tailored to promote a compelling Government interest. . . . If a less restrictive alternative would serve the Government’s purpose, the legislature must use that alternative.”). []
  10. Ward v. Rock Against Racism, 491 U.S. 781, 798-99 (1989). []
  11. See Melville B. Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 UCLA L. Rev. 1180 (1970). []
  12. Neil Weinstock Netanel, First Amendment Constraints on Copyright After Golan v. Holder, 60 UCLA L. Rev. 1082 ( 2013) [hereinafter “Netanel”]. []
  13. Melville B. Nimmer, The Right to Speak from Times to Time: First Amendment Theory Applied to Libel and Misapplied to Privacy, 56 Cal. L. Rev. 935 (1968). []
  14. See New York Times Co. v. Sullivan, 376 U.S. 254 (1964). []
  15. See Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985). []
  16. Id. at 556 (internal quotations and brackets omitted). []
  17. Id at 560. []
  18. Mark A. Lemley and Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property Cases, 48 Duke L.J. 147, 206 (1998). []
  19. Neil Weinstock Netanel, Locating Copyright Within the First Amendment Skein, 54 Stan. L. Rev. 1, 54 (2001). []
  20. Id. at 55. []
  21. See Eldred v. Ashcroft, 537 U.S. 186 (2003); Golan v. Holder, 132 S.Ct. 873 (2012). []
  22. Id. at 218-19. []
  23. Id. at 219-20 (internal quotations omitted). []
  24. Id. at 221 (internal citations omitted). []
  25. Golan, 132 S.Ct. at 890-91 (internal citations omitted). []
  26. Netanel, 60 UCLA L. Rev. at 1102. []
  27. Id. []
  28. Id. at 1114. []
  29. Id. at 1115. []
  30. See Universal City Studios v. Corley, 273 F.3d 429 (2d Cir. 2001). []
  31. Netanel, 60 UCLA L. Rev. at 1115. []
  32. Corley, 273 F.3d at 459. []
  33. Netanel, 60 UCLA L. Rev. at 1116. []
  34. Id. []
  35. Id. at 1118. []
  36. 17 U.S.C.S. § 107 (Lexis 2013); I leave aside the application of Section 107 to Section 106A. []
  37. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984). []

A number of interesting and potentially important fair use decisions have been released by courts in the past several months. I had originally planned on discussing all in one fell swoop, but as I started writing about the first of these decisions, Cariou v. Prince, released last April, the article started getting a bit long, so I’ll save discussion of other recent fair use decisions for later.

Fair Use and Transformativeness

As many readers know, fair use is a central concept in U.S. copyright law, and is recognized in the Copyright Act at 17 U.S.C. § 107. The doctrine was originally developed by courts as a rule of reason to allow privileged use of copyrighted works under certain circumstances.1 As stated in § 107, those circumstances can include “criticism, comment, news reporting, teaching…, scholarship, or research.” Whether a use is fair or unfair also generally requires a look at four factors: (1) the purpose and character of the use, (2) the nature of the work being used, (3) the amount and substantiality of the portion used, and (4) the effect of the use on the potential market of the original work.

In 1990, Judge Pierre Leval, formerly a federal judge in the Second Circuit Court of Appeals, wrote Toward a Fair Use Standard, which has since become highly influential in shaping the fair use inquiry into one that focuses primarily on “transformativeness.” Judge Leval wrote:

The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test; in Justice Story’s words, it would merely “supersede the objects” of the original. If, on the other hand, the secondary use adds value to the original–if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings– this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.

Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses.

The existence of any identifiable transformative objective does not, however, guarantee success in claiming fair use. The transformative justification must overcome factors favoring the copyright owner. A biographer or critic of a writer may contend that unlimited quotation enriches the portrait or justifies the criticism. The creator of a derivative work based on the original creation of another may claim absolute entitlement because of the transformation. Nonetheless, extensive takings may impinge on creative incentives. And the secondary user’s claim under the first factor is weakened to the extent that her takings exceed the asserted justification. The justification will likely be outweighed if the takings are excessive and other factors favor the copyright owner.

The Supreme Court would adopt Leval’s transformative framing in Campbell v. Acuff-Rose Music, 510 US 569 (1994), and it has continued to serve as a jumping off point for discussions of fair use by courts and commentators since, including the Second Circuit in Cariou.

Cariou v. Prince

Cariou began with the use, without permission, of a set of photographs by appropriation artist Richard Prince. The photos at issue come from a 2000 book Yes Rasta, and were taken by Patrick Cariou over the course of six years as he lived and worked among Jamaican Rastafari. Prince happened across the book and began using dozens of them to create new works by, for example, pasting other pictures on top or painting colored “lozenges” over certain portions. Boom. Art.

Cariou sued, and the district court rejected Prince’s fair use defense, specifically his argument that using copyrighted works as “raw ingredients” to create new works is per se fair use. To the contrary, said the court, fair use requires some form of transformative comment on the original work — “all of the precedent this Court can identify imposes a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works.” The precedent is also consistent with the language of the fair use provision in the Copyright Act itself. As the district court noted, “the illustrative fair uses listed in the preamble to § 107 — ‘criticism, comment, news reporting, teaching [...], scholarship, [and] research’ — all have at their core a focus on the original works or their historical context.” A work which merely “transforms” an existing work, with nothing more, is a derivative work, the creation of which is exclusive to the copyright owner of the existing work.2

The transformative inquiry fell under the district court’s analysis of the first fair use factor; the court also found that the commerciality of Prince’s use and his bad faith — Prince had neither sought permission nor licensing from Cariou — meant the first prong weighed heavily against fair use. Prince did not fare better under the other fair use factors: Cariou’s photos were highly creative, Prince copied substantially more of Cariou’s photos than necessary (including, in some cases, the entire work), and his secondary use unfairly damaged the original market for Cariou’s photos.

The Second Circuit reversed the district court’s decision, pulling what one commentator called “a complete about-face from traditional transformative use analyses.” It rejected the requirement that the first factor requires some sort of connection to the original work. Said the court, “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching, scholarship, and research) identified in the preamble to the statute.” Instead, it is enough that the new work merely “alter the original with ‘new expression, meaning, or message.'”

The Second Circuit also rejected the district court’s holding on the fourth factor, the effect of the new use on the potential market of the original work. Richard Prince sells his works for millions of dollars to people like “Tom Brady… Gisele Bundchen… Robert DeNiro, Angelina Jolie, and Brad Pitt,” remarked the court, while Cariou has sold prints of his photos primarily to family members and acquaintances.

Mitigating the effect of the second prong of the fair use inquiry, and dialing back the district court’s emphasis on the “amount and substantiality” that Prince used, the Second Circuit held that 25 of Prince’s works that used Cariou’s photos were fair use. It remanded five photographs to the district court for further inquiry, deciding that they presented too close a question of fair use on the test it used. This last act drew a dissent from Judge Wallace, who wrote that once the Second Circuit stated its new legal test for transformative uses, it should have sent all thirty photos back to the district court to determine if the uses were ultimately fair. Said Wallace, “Certainly we are not merely to use our personal art views to make the new legal application to the facts of this case.”

Altering Campbell v. Acuff-Rose with “new meaning”

Regardless of your feelings about whether the outcome of the Second Circuit’s new test is good or bad, it must be noted that it directly contradicts Supreme Court precedent — ironically, the same precedent the Circuit uses to justify its holding. In Campbell v. Acuff-Rose Music (mentioned earlier), the Supreme Court did not hold, as the Second Circuit said it did, that it is sufficient under the first fair use factor for a new work to merely “alter the original with ‘new expression, meaning, or message.'” Instead, the Court said — in holding that parody has transformative value — “the heart of any parodist’s claim to quote from existing material[] is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works” (emphasis added). The Court continued:

If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

The above passage makes it clear that the Second Circuit disregarded the Supreme Court’s direction on transformativeness. That Prince was using Cariou’s photos as raw materials to “avoid the drudgery in working up something fresh” rather than building upon them seems readily apparent, especially given Prince’s own testimony during the trial that he “‘do[es]n’t really have a message,’ that he was not ‘trying to create anything with a new meaning or a new message,’ and that he ‘do[es]n’t have any . . . interest in [Cariou's] original intent.'”

Note that Campbell‘s definition of transformativeness isn’t an aesthetic judgment — there is nothing wrong with using existing works as raw materials in creating new works, and appropriation art is no less capable of respect or meaning than original works; it’s just that permission or licensing is required to use the existing work.3

The Second Circuit did not just ignore Supreme Court precedent on the major point of transformativeness, it also ignored it when it looked at the third fair use factor, which considers the amount and substantiality of the original work taken. Citing to the Supreme Court’s Campbell decision, the Second Circuit said, “the law does not require that the secondary artist may take no more than is necessary.” To the contrary, the Campbell absolutely said this. The caveat being that, because of the nature of parody, this “no more than necessary” taking may include a substantial portion or the “heart” of the work — “the parody must be able to ‘conjure up’ at least enough of that original to make the object of its critical wit recognizable.”

But the requirement that the secondary artist take no more than necessary is still there. As the Court went on to say (and consistent with the requirement that a transformative use have a focus on the original work to be fair), “Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song’s overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original.” The Supreme Court agreed that the copying of lyrics was fair precisely because “no more was taken than necessary.” But, it should be pointed out, it remanded to the lower court to determine whether 2 Live Crew’s copying of the bass riff in the original work was excessive. According to a contemporaneous article on the decision in the Memphis Commercial Appeal, the two parties settled after the Supreme Court ruling, with both parties agreeing to a license.

Toward a Fair Use Standard?

At its core, fair use is a necessary aspect of copyright, playing a critical role in maintaining the right’s proportionality and public benefit. The Copyright Office wrote in its 1958 copyright law revision study on fair use:

It has often been stated that a certain degree of latitude for the users of copyrighted works is indispensable for the “Progress of Science and Useful Arts.” Particularly in the case of scholarly works, step-by-step progress depends on a certain amount of borrowing, quotation and comment.4

The Second Circuit’s decision in Cariou, aside from ignoring Supreme Court precedent, loses sight of that purpose. One observer remarked:

Regardless of how little is necessary to transform a work into something new, though, the purpose of copyright law and the very incentive it gives to originators to create would be lost if another entity could take a whole work, add a mustache, sell it as the entity’s own, and evade copyright infringement.5

Fair use should be called upon when requiring permission would impede the progress of the useful arts. Cariou flips this long-standing principle on its head by simply asking whether unlicensed use would promote the progress of the arts. It’s a subtle yet fundamental distinction.

In June, the Second Circuit denied Cariou’s petition to rehear the case. It remains to be seen whether Cariou will try to take his case to the Supreme Court, which would put the issue of fair use — and transformativeness — in front of the Court for the first time in almost thirty years. Getting to the Supreme Court, of course, is always a long shot, so it may be that the Second Circuit’s decision will remain the law.

Footnotes

  1. See H.R. REP. NO. 94-1476, at 65 (1976). []
  2. 17 U.S.C. § 106(2). []
  3. Indeed, Laura Gilbert of The Art Newspaper has reported that since the 1960s, most well-known appropriation artists (including Andy Warhol) have been in the practice of licensing the underlying works they rely on. See also Thomas W. Joo, Remix Without Romance, 44 Connecticut Law Review 415 (2011), who explains that licensing of digital samples has been the prevalent industry practice in the music business for decades. []
  4. Alan Latman, Fair Use of Copyrighted Works, Copyright Office, Copyright Law Revision Study No. 14, pg. 7. []
  5. Jennifer Gilbert-Eggleston, Cariou v. Prince: Painter or Prince of Thieves? 11 U. Denv. Sports & Ent. Law J. 117, 124 (2011). See also Zehra Abdi, Morris v. Guetta: Are Appropriation Artists Getting A Free Pass by the Second Circuit?, CDAS Blog (May 28, 2013): “the Second Circuit has expanded the meaning of transformative use in the area of appropriation art so greatly that it essentially gives one artist permission to use even a substantial body of another artist’s work as in Cariou, merely for convenience.” []

Terry Hart is on vacation, so I have the great pleasure of presenting this week’s Endnotes.

First Amendment Constraints on Copyright After Golan v. Holder – Professor Neil Netanel has a fascinating look at the intersection of copyright law and the First Amendment in the wake of the Supreme Court’s opinion in Golan v. Holder. Back in 2001, Netanel argued that First Amendment challenges to copyright laws should be analyzed under the content-neutral rubric of intermediate scrutiny. The Supreme Court twice since then has rejected that approach, instead adopting Melville Nimmer’s view that copyright law internally balances First Amendment values. Working within that framework, Netanel now launches a new challenge of the DMCA anti-circumvention provisions and the now-defunct SOPA provisions for intermediary liability. Even if you disagree with Netanel’s conclusions (as I do), it’s a well-argued and thought-provoking article that I think is a must-read for all copyright geeks.

Copyright: The Inverted Human Period – Reflecting on the recent copyright revision hearings, Faza at the Cynical Musician looks into why copyright is important for the entire nation and not just for individual rightholders. Faza starts with the copyright granted to a songwriter and then traces the value stemming therefrom: “What we get in the end is an inverted human pyramid: a vast, tree-like structure of innumerable jobs being created, all resting on the back of our original songwriter and her songs. Take her away and the whole edifice collapses. *** It should be clear that even those who are most vocal against copyrights – tech companies who’d like to be in the content distribution biz without the content acquisition costs and their supporters – would lose out big time if the content were taken away. So whence the blindness?” Kudos to Faza who regularly turns out thoughtful and insightful pieces such as this.

Appeals Court Denies Jack Kirby Estate’s Bid to Overturn Marvel Copyright Ruling – Eriq Gardner at Hollywood, Esq. brings us the latest news in the copyright battle between the heirs of legendary comic book artist Jack Kirby and comic book publisher Marvel Comics. The Second Circuit affirmed in part the district court’s rejection of the heirs’ attempt to terminate under Section 304 certain copyright assignments made by their father. The termination rights turned on whether the works at issue were “works made for hire,” and the opinion is an interesting one as it shows the difficulty courts face in making that determination when the facts cut both ways. Ultimately, the court of appeals held that, even though Kirby was a freelancer with much independence, he nevertheless worked so closely and continuously with Marvel that the latter was the copyright owner ab initio under the work-for-hire doctrine.

Are Implied Licenses Enforceable? – At Forbes, Oliver Herzfeld looks at a district court opinion analyzing the enforceability of implied licenses. The dispute in that case turned on the fact-specific inquiry as to whether a sports arena had been granted an implied license to use a photographer’s photos on its Facebook page. Based on the lessons derived from the opinion, Herzfeld warns that “licensors would be well advised to (i) avoid engaging in casual communications or conduct that may imply a consent to actions or omissions on the part of licensees that exceed or contradict the terms of the parties’ license agreements, (ii) maintain a disciplined license agreement amendment process to document and memorialize all license agreement changes in signed writings, and (iii) include provisions in all license agreements reserving all rights not expressly granted to the licensees therein and explicitly disclaiming that any course of conduct on the licensor’s part will constitute a consent to, or waiver of, any term or provision of the license agreements.”

Comcast Developing Anti-Piracy Alternative to ‘Six Strikes’ (Exclusive) – Andrew Wallenstein at Variety has the news that Comcast is working on a plan to convert illicit file-swappers into paying customers. The system would work in real-time by presenting an infringer with a pop-up providing links to legal sources for the material being infringed. Wallenstein posits that this “reflects an alternate philosophy regarding copyright infringement, one that sees the illegal activity less as a crime that requires punishment and more as lead generation to a consumer whose behavior is borne out of inadequate legitimate digital content options.”

Academic Senate approves open access policy – The University of California has announced that future research articles by its faculty will be made available to the public at no cost: “The policy covers more than 8,000 UC faculty at all 10 campuses of the University of California, and as many as 40,000 publications a year. It follows more than 175 other universities who have adopted similar so-called ‘green’ open access policies. By granting a license to the University of California prior to any contractual arrangement with publishers, faculty members can now make their research widely and publicly available, re-use it for various purposes, or modify it for future research publications.”

Charge of Copyright Infringement in PTO Prior Art Disclosure Suffers Another Blow – Tony Dutra at Bloomberg BNA discusses a setback for the publisher plaintiffs in one of their many ongoing lawsuits against patent law firms that copy technical journal articles as part of the prior art submission process at the USPTO. The magistrate judge, after finding that all four fair use factors weighed in the defendants’ favor, issued a report recommending that the district court side with the patent law firm defendants. In the magistrate judge’s opinion, the defendants’ “use of the Articles facilitates the complete disclosure required in the patent-application process, assisting patent examiners in determining whether applications for patent protection should be granted, and, consequently, fulfilling the very same purpose of promoting science and the arts that the Copyright Act was intended to accomplish.”

Cross-posted on the Law Theories blog.

One often hears the argument from copyright opponents that copyright is a privilege and not a right. Rick Falkvinge says that copyright is a “government-granted market-distorting privilege” that limits the property rights of others. Stephan Kinsella argues that copyrights are “grants of monopoly privilege by the state” that allow its holder to petition the courts for redress. Mike Masnick claims that it’s “hogwash” not to recognize that copyright is a “monopoly privilege.” Crosbie Fitch believes that copyright grants authors “unethical privileges” over others.

Many claim as well that fair use is a right and not a privilege. Patricia Aufderheide and Peter Jaszi argue that Shepard Fairey had the “fair use right” to make his famous Obama poster. The late Professor L. Ray Patterson claimed that the “statutory right of fair use” is often ignored.1 Professor Lawrence Lessig laments that “[y]ou either pay a lawyer to defend your fair use rights or pay a lawyer to track down permissions so you don’t have to rely upon fair use rights.” The list goes on.

The baseline, so the argument goes, is that we have the right to do whatever we want with our property, including the right to make copies. Copyright changes this by giving authors the privilege to prevent us from copying. Thus, copyright takes away my right to copy by granting an author the privilege to stop me. Moreover, the argument continues, despite the privilege given to authors, we have the right to make fair use of a work. This line of reasoning, to borrow Masnick’s term, is “hogwash.”

In this post, I’ll explain why copyright opponents have it exactly backwards when they claim that copyright is a privilege and fair use is a right. At the outset, I note that these terms can have various, nontechnical meanings that possibly overlap. For example, Black’s Law Dictionary defines “right” to mean, inter alia, a “privilege,” and it defines “privilege” to mean, inter alia, a “right.”2 But copyright opponents are not using these terms interchangeably; they are using them in contradistinction to each other. In other words, they are saying that right and privilege are mutually exclusive terms. It’s this technical usage of these terms that I’ll address.

Bell’s “Intellectual Privilege”

Perhaps the biggest proponent of the copyright-as-privilege claim is Professor Tom Bell. In his book entitled Intellectual Privilege (draft available here), Bell makes the argument that “copyright more closely resembles a privilege—a special statutory benefit—than it does a right, general in nature and grounded in common law, deserving the title of ‘property.’”3 He claims that “calling copyright a ‘privilege’ follows legal and popular usage, past and present.”4 In support of this broad assertion, Bell cites the 6th edition of Black’s Law Dictionary in a footnote. He conspicuously doesn’t quote the actual text from Black’s in that footnote, perhaps because it in fact defines copyright as a “right.” Black’s provides:

Copyright. The right of literary property as recognized and sanctioned by positive law. An intangible, incorporeal right granted by statute to the author or originator of certain literary or artistic productions, whereby he is invested, for a specified period, with the sole and exclusive privilege of multiplying copies of the same and publishing and selling them.5

Black’s isn’t saying that copyright is a privilege in contrast to a right. Instead, the dictionary merely reflects the fact that, as discussed below, a rightholder has the privilege to exercise the right that he holds. What makes it a right is that he has a legally enforceable claim against another who copies without permission. As we’ll see, copyright owners, just like all rightholders, have both rights and privileges.

Bell notes that both courts and commentators “have often described copyright as a legal privilege.”6 In support, he cites Eldred v. Ashcroft where Justice Stevens in dissent refers to “copyright privileges,” Sony v. Universal where Justice Stevens writing for the majority refers to the “copyright privilege,” and Watson v. Buck where Justice Black writing for a unanimous Court refers to “copyright privileges.”7 No doubt there are many other such references in the case law and commentary. But are those references really making the point that copyright is a privilege and not a right? Not at all.

Justice Stevens in Eldred also refers to copyright as granting “exclusive rights” and “federal rights.”8 Similarly, in Sony, Justice Stevens frames the question presented as whether “the rights conferred upon respondents by the Copyright Act” have been violated, and then he goes on to discuss the “exclusive rights” granted by copyright at length.9 And in Watson, Justice Black refers to copyrights as “property rights.”10 Bell’s argument that these Justices considered copyrights to be privileges as opposed to rights is severely undercut by the fact that the very same Justices in the very same opinions also called them rights.

Bell argues that “copyright represents a statutory exception to our common law rights.”11 It is only with the introduction of copyright, he contends, that our “natural and common law rights” to copy are limited.12 Thus, according to Bell, the rule is that we may copy, and the exception is copyright. In this way, he continues, copyright is not a right, but rather it is “an anti-property right” that limits what we can do with our property.13 Bell’s theory is that this copyright exception gives to authors a privilege that relieves them of the duty they would otherwise have to allow others to copy their works.

Bell ponders whether his version of privilege comports with “Wesley Hohfeld’s influential one,”14 referencing the late Professor Hohfeld whose well-known law review article discussing the difference between rights and privileges has been extremely influential in legal thinking since its publication one century ago.15 Erroneously, Bell concludes that he is being “more true to Hohfeld’s project” than those who consider copyright to be a right.16 To understand how Bell is turning Hohfeld on his head and confusing the difference between a right and a privilege in the Hohfeldian sense, we have to take a step back and look at Hohfeld’s fundamental “jural relations.”

Hohfeld’s “Jural Relations”

Laymen typically use the word “property” to refer to a thing with respect to which legal relations between persons exist. Lawyers, on the other hand, generally use the word “property” to refer to the legal relations that exist between persons with respect to a thing. The aforementioned Professor Hohfeld developed an analytical framework for discussing these legal relations—or as he called them, “jural relations.” Hohfeld identified eight fundamental jural relations: right, privilege, power, immunity, duty, no-right, liability, and disability. With these building blocks, we can precisely define the legal relations that exist between persons with respect to a given thing.

Hohfeld’s system of jural relations has been very popular amongst jurists over the last century. For example, the savants at the American Law Institute adopted Hohfeld’s system in the Restatement (First) of Property, first published in 1936. A quick search on Westlaw shows that Hohfeld’s original 1913 paper and his follow-up 1917 paper together have been cited over a thousand times in the case law and commentary.17 For a great explanation of Hohfeld’s system of jural relations, I recommend this primer from the Chicago-Kent College of Law.

Hohfeld arranged the jural relations into different pairs, called “jural correlatives.” Each pair of jural correlatives looks at a given jural relation from opposing points of view. For example, if O and P have a jural relation between them, we can look at that jural relation either from O’s point of view or from P’s point of view. These jural correlatives arise together, meaning that the existence of one necessarily implies the existence of the other. Hohfeld’s jural correlatives for rights and privileges are: rightduty and privilegeno-right. Thus, as between O and P, if O has a right, then P has a duty, and if O has a privilege, then P has a no-right.

A right is “a legally enforceable claim of one person against another, that the other shall do a given act or shall not do a given act.”18 The person against whom the right exists has the correlative duty, which is the legally enforceable obligation on the part of the duty-holder to do or not to do the given act. For example, if O has the right to exclude P from entering his land, then P has the correlative duty not to enter O’s land. If P violates his duty and enters O’s land, O then has a legally enforceable claim against P, and O can summon the power of the state to prevent P from entering his land.

A privilege is “a legal freedom on the part of one person as against another to do a given act or a legal freedom not to do a given act.”19 The person against whom the privilege exists has the correlative no-right, which is the absence of a legally enforceable claim against the privilege-holder to do or not do the given act. For example, if O has the privilege to enter P’s land, then P has the no-right to exclude O from his land. If O exercises this privilege and enter P’s land, P then has no legally enforceable claim against O, and P cannot summon the power of the state to prevent O from entering his land.

It should also be noted that not only can a rightholder prevent another from doing or not doing a given act, but he himself has the privilege of doing or not doing the given act. Thus, a rightholder holds both a right and a privilege. For example, if O has the right to exclude P from entering his land, O then also has the privilege of entering his own land. As Hohfeld explains:

[I]f X has a right against Y that he shall stay off the former’s land, the correlative (and equivalent) is that Y is under a duty toward X to stay off the place. *** [W]hereas X has a right or claim that Y, the other man, should stay off the land, he himself has the privilege of entering on the land; or, in equivalent words, X does not have a duty to stay off.20

While the person against whom a right exists has a duty of noninterference with respect to the rightholder,21 the person against whom a privilege exists does not have such a duty with respect to the privilege-holder. Thus, if O grants to P the privilege of entering his land, O then has no duty of noninterference towards P, and O may interfere with P’s attempts to exercise his privilege of entering O’s land.

Hohfeld colorfully illustrates the point:

A. B. C. and D, being the owners of the salad, might say to X: “Eat the salad, if you can; you have our license to do so, but we don’t agree not to interfere with you.” In such a case the privileges exist, so that if X succeeds in eating the salad, he has violated no rights of any of the parties. But it is equally clear that if A had succeeded in holding so fast to the dish that X couldn’t eat the contents, no right of X would have been violated.22

And as one commentator explains:

If X’s privilege of entering the land, in relation to Y, consists only in X being under no duty to Y not to enter the land, this means solely that X is not in breach of a duty to Y if he enters the land; nothing is implied by this to prevent Y making it impossible to enter the land—by using threats or violence, by building walls, constructing moats filled with piranha fish . . . .23

The takeaway from this is that a right gives the rightholder a legally enforceable claim against another that he shall do or not do a given act, and the person against whom the right exists has the correlative duty to do or not do the given act. A privilege, on the other hand, negates a duty to do or not do a given act that the duty-holder would otherwise have, relieving him of the liability that he would have for doing or not doing the given act but for the privilege. While the person against whom the privilege exists has the correlative no-right, that is, the absence of a legally enforceable claim against the privilege-holder for doing or not doing the given act, there is no duty of noninterference with respect to the privilege-holder, and the no-right-holder may interfere with the privilege-holder’s attempts to exercise his privilege.

Why Copyright is a Right

Professor Bell cleverly frames things to arrive at his conclusion that copyright is a privilege and not a right. The baseline, as Bell correctly notes, is that in the absence of copyright everyone would be able to copy as they please, and it is only with the introduction of copyright that this baseline changes. Bell then erroneously claims that this ability to copy as one pleases in the absence of copyright is a right. Thus, according to Bell, in the absence of copyright, O has the right to copy P’s work, and P has the correlative duty to permit O to copy his work. Copyright changes this, Bell continues, by granting P a privilege which negates his duty to permit O to copy his work.

It’s simple to dispense with Bell’s claim that copyright is a privilege. It is true that, absent copyright, people can freely copy a given work. The fault in Bell’s argument is in equating this ability to copy freely in the absence of copyright with a right. If it were a right, then others would be under the correlative duty to permit the rightholder to copy a given work, and the rightholder would have a legally enforceable claim against those that breach this duty. But clearly no such duty exists. What cause of action would this supposed rightholder have against another who interferes with his attempt to copy a given work? No such cause of action exists since no one has a duty to permit another to copy a given work.

Nor does copyright grant a copyright owner a privilege. If copyright were merely a privilege, then that would relieve the copyright owner of the duty that he otherwise would have to permit another to copy his work—but again, there is no such duty to permit another to copy his work. Moreover, a privilege does not give its holder a legally enforceable claim against another who does or does not do a given act. Whence does Bell think a copyright owner’s claim against another who copies his work arises if the owner has merely a privilege? Without a right to exclude another from copying his work, there is no legally enforceable claim against another who so copies. And if a copyright owner is merely a privilege-holder, whence does Bell think the duty arises in another not to copy the copyright owner’s work? Without a right, there is no such correlative duty. Yet clearly such a duty does exist.

Two examples demonstrate the point. Take, for instance, Professor Hohfeld’s journal article from 1913 that I linked to on the University of Texas (“UT”) server. Being a century old, Hohfeld’s article is in the public domain, and it is therefore not protected by copyright. According to Bell, being that there is no copyright protection for the article, O has the right to copy this article, and others, including UT, have the duty to refrain from interfering with O as he exercises his right. Thus, according to Bell, UT has the duty to permit O to copy the article. If UT were to password-protect access to the article, thereby interfering with O’s exercise of his right to copy it, O would have a legally enforceable claim against UT for breaching its duty of noninterference with respect to O’s right to copy the article. Obviously there is no such duty on UT’s part, and UT can grant access to the article to everyone in the world except for O if it so chooses without facing any liability.

Take another example, but this time with the work in question being under copyright. Say I write an original manuscript by hand on paper. By virtue of the work being fixed in a tangible medium, I am automatically granted a copyright in the work by the Copyright Act. Bell’s view is that this copyright has only granted me a privilege which relieves me of the duty I would otherwise have to respect another’s right to copy my work as he pleases. But what accounts for the fact that I have a legally enforceable claim against another who copies my work? And what accounts for the duty that another has to not copy my work? If copyright merely grants me a privilege, then there would be no such duty on the part of another to not copy my work, and I would have no legally enforceable claim against another that copies my work. Clearly copyright has given me something more than a mere privilege.

Thus, Professor Bell is mistaken to claim that his view of copyright-as-privilege is true to Professor Hohfeld’s explication of the fundamental jural relations. The proper way to view this is see that, as the Constitution and the Copyright Act acknowledge, copyrights are grants of exclusive rights.24 Copyrights are rights because they give the rightholder a legally enforceable claim against another who copies his work, and they create in another the correlative duty to not copy the copyright owner’s work.

Why Fair Use is a Privilege

Along these same lines, it’s clear that fair use is a privilege and not a right. If fair use were a right, then the fair user would have a legally enforceable claim against another that he should do or not do a given act. The other would then owe the fair user the correlative duty to do or not do the given act, and he would have a duty of noninterference with respect to the fair user. But fair users have no such claim and are owed no such duty. Fair use instead is merely a privilege. It permits the fair user to do an act—copying—that but for the privilege would give rise to liability. The privilege negates the duty the fair user would otherwise have with respect to the copyright owner, and the copyright owner has the correlative no-right, that is, the absence of a legally enforceable claim to hold the fair user liable for his copying. That fair use is a privilege accounts for the fact that it operates as an affirmative defense and not as an affirmative right.25

Thus, if O is the author of a work, O has certain exclusive rights in that work which give him a legally enforceable claim against P should P copy the work. P, in turn, owes O the correlative duty to not copy the work, and if P breaches this duty, he can then be held liable by O for the infringement. But not all copying by P infringes O’s exclusive rights. P has the privilege of making fair use of O’s work, and this privilege negates the duty to not copy O’s work that P would otherwise have. This privilege on P’s part creates the correlative no-right on O’s part which negates O’s legally enforceable claim against P. But for P’s privilege, O could hold P liable for the copying, but P’s fair use privilege arms P with a perfect defense to a claim of infringement.

As a mere privilege-holder, a fair user has no legally enforceable claim against another that he should do or not do a given act—only a rightholder has such a claim. Moreover, as a mere privilege-holder, a fair user is owed no duty of noninterference by another as he attempts to exercise his privilege. Thus, others may interfere with the would-be fair user’s attempts to make fair use of a given work. That it is not impermissible for the would-be fair user to make fair use of a given work is not the same as being guaranteed that he may do so. This is demonstrated in the passage from Hohfeld quoted above about the salad—I may grant you a license to eat my salad, which would absolve you of any liability should you do so, but your privilege to eat my salad does not come with any guarantees that I will make the salad available to you. “Not impermissible does not equate to guaranteed.”26

That a fair user has no legally enforceable claim, i.e., a right, to make fair use of a given work is demonstrated in the Second Circuit’s opinion in Universal v. Corley.27 There, the appellants argued that the DMCA anti-circumvention provisions interfered with their alleged constitutional right to make fair use of a DVD. The court of appeals rejected the argument: “We know of no authority for the proposition that fair use, as protected by the Copyright Act, much less the Constitution, guarantees copying by the optimum method or in the identical format of the original. . . . Fair use has never been held to be a guarantee of access to copyrighted material in order to copy it by the fair user’s preferred technique or in the format of the original.”28 I think the answer is much simpler than that. Since fair use is merely a privilege, the fair user is owed no duty of noninterference by others. A rightholder, or anyone else for that matter, can make the exercise of a would-be fair user’s privilege as easy or as difficult as he likes—even impossible if he so wishes.

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Footnotes

  1. L. Ray Patterson, Copyright in the New Millennium: Resolving Conflict between Property Rights and Political Rights, 62 Ohio St. L.J. 703, 704-05 (2001). []
  2. See Black’s Law Dictionary (9th ed. 2009). []
  3. Tom W. Bell, Intellectual Privilege: A Libertarian View of Copyright 108 (2010) [hereinafter “Bell”]. []
  4. Id. []
  5. Black’s Law Dictionary (6th ed. 1990) (emphasis added). []
  6. Bell at 110. []
  7. See Eldred v. Ashcroft, 537 U.S. 186, 233 (2003) (Stevens, J., dissenting); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 421 (1984); Watson v. Buck, 313 U.S. 387, 404 (1941). []
  8. See Eldred, 537 U.S. at 223, 231-32, and 241 (Stevens, J., dissenting). []
  9. See Sony, 464 U.S. at 420, 433, 436, and 447. []
  10. See Watson, 313 U.S. at 404. []
  11. Bell at 110. []
  12. Id. []
  13. Id. at 110-11 (emphasis in original). []
  14. Id. []
  15. See Wesley Newcomb Hohfeld, Some Fundamental Legal Conceptions As Applied in Judicial Reasoning, 23 Yale L.J. 16 (1913) [hereinafter “Hohfeld”]. []
  16. Bell at 113. []
  17. See Hohfeld; Wesley Newcomb Hohfeld, Fundamental Legal Conceptions as Applied in Judicial Reasoning, 26 Yale L.J. 710 (1917). []
  18. Restatement (First) of Property § 1 (1936); see also Black’s Law Dictionary (9th ed. 2009) (A “right” is a “legally enforceable claim that another will do or will not do a given act; a recognized and protected interest the violation of which is a wrong.”). []
  19. Id. at § 2; see also Black’s Law Dictionary (9th ed. 2009) (“A privilege grants someone the legal freedom to do or not to do a given act. It immunizes conduct that, under ordinary circumstances, would subject the actor to liability.”). []
  20. Hohfeld at 32 (emphasis in original). []
  21. See, e.g., O’Brien v. Leidinger, 452 F.Supp. 720, 726 (E.D. Va. 1978) (“Whenever there exists a right in any person, there also exists a correlative duty in some other person or persons not to abridge or interfere with the exercise of that right.”). []
  22. Hohfeld at 35 []
  23. Andrew Halpin, Rights and Law: Analysis and Theory 35 (1997). []
  24. See, e.g., U.S. Const. art. I, § 8, cl. 8 (West 2013) (Congress has the power “[t]o promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their . . . Writings . . . .”) (emphasis added); 17 U.S.C.A. § 106 (West 2013) (copyright grants “the owner of a copyright . . . the exclusive rights to do and to authorize” certain listed activities such as to make or to distribute copies) (emphasis added); (17 U.S.C.A. § 107 (West 2013) (fair use is one of the “[l]imitations on exclusive rights” of authors.) (emphasis added). []
  25. See, e.g., Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 561 (1985) (“The drafters resisted pressures from special interest groups to create presumptive categories of fair use, but structured the provision as an affirmative defense requiring a case-by-case analysis.”); H.R. Rep. 102-836, *3 (“Fair use is an affirmative defense, and as such is relevant only after a copyright owner has made out a prima facie case of infringement.”); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994) (“Since fair use is an affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets.”). []
  26. David R. Johnstone, Debunking Fair Use Rights and Copyduty Under U.S. Copyright Law, 52 J. Copyright Soc’y U.S.A. 345, 369-70 (2005) (internal quotations omitted). []
  27. Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001). []
  28. Id. at 459. []

Control is Fundamental to Copyright Theory — Devlin Hartline continues a discussion began last week when some criticized the assertion, made during Thursday’s copyright review hearing, that copyright is about control. Says Hartline, “All property law involves determining how much control to give to rightholders, and copyright is no exception. Copyright law presents its own unique considerations, no doubt, and the task of Congress is difficult as it determines where to strike the balance that it deems proper between the competing sets of claims as to what is best for the public good. But when considering where to strike this balance, it should be remembered that what is good for authors is often also good for the public.”

Department of Commerce releases report on Copyright Policy, Creativity, and Innovation in the Digital Economy — I have a summary of the Department of Commerce Internet Policy Task Force’s Green Paper, released on Wednesday, over at Idea/Expression. “The purpose of the Green Paper is to review the development of copyright policy as it has responded to new technologies in recent decades, assess the current challenges facing copyright law, and provide a set of recommendations to address some of those challenges,” and will likely play an important role in copyright policy discussions going forward.

Getting Creative With the G.D.P. — “We have undervalued creativity and research,” notes the New York Times, as it reports on a significant change to how the G.D.P. is calculated. The Bureau of Economic Analysis will now give greater economic weight to a variety of creative works and intellectual property, to better reflect the value they generate for the economy. The change, which will be applied retroactively as well, will boost the size of the G.D.P. by tens of billions of dollars.

Steal a Little: Piracy & the Economy — More goodness from David Newhoff, who rebuts a recent assertion that we shouldn’t worry about infringement because the money not spent on creative works can be spent on other things. Well, sure, but that could be said about anything.

8 Takeaways from today’s IP Subcommittee Hearing — Chris Castle gives a good rundown of some of the highlights of Thursday’s hearing on technology and innovation in front of the House Judiciary Committee Subcommittee on Courts, Intellectual Property, and the Internet.

Why Telling Artists To Stop Selling Music & Just Make Money Through Live Shows Is Ridiculous — “Giving away all your music for free and trying to make your living via other revenue streams can be a valid approach. Except that I don’t know of any musicians actually doing that. The ones who do make all their music available for free are also selling it and some are doing just fine without touring at all. As a one size fits all solution, it still seems to be the fantasy mostly of people in the tech world, which is weird because one size fits all doesn’t work in their world either.”

Claeys on Aerial Trespass — Lawrence Lessig began his book Free Culture with the story of how commercial airflight was initially hampered by overly restrictive property rules; landowners had dominion over airspace above their land, creating nearly insurmountable obstacles to creating flight patterns. The implication being that this is analogous to the development of the internet and intellectual property. Now take a guess about how inaccurate the aerial trespass fable is.